CAPRICE AUSTRALIA PTY LTD V MG ICON LLC [2015] ATMO 8

This matter concerned a non-use removal application filed by MG Icon seeking the removal of Caprice Australia’s trade mark registration for MATERIAL GIRL and Caprice Australia’s opposition thereto.

As a brief background the Caprice registration was initially owned by Brag, but was assigned to Caprice prior to the matter being heard.  Most of the use alleged by Caprice took place at the time that the trade mark registration was owned by Brag.  Brag had licensed another entity, Casco, to use the MATERIAL GIRL trade mark in Australia.

In evidence were invoices issued by Wild Card (an entity acting as ‘sale agent’ on behalf of Casco)that were alleged to relate to sales made by Wild Card during the relevant period whilst it was acting under an ‘implied licence agreement’from Casco.

MG Icon argued that the evidence led did not demonstrate ‘use by the owner’ of the trade mark, as Brag had engaged Casco as its ‘exclusive licensee’ and the use by Wild Card was not, therefore, use by the owner.

The Hearing Officer did not consider this a persuasive argument and found that there was use of the trade mark during the relevant period.

On the issue of discretion, the argument was made by MG Icon that the use of the trade mark MATERIAL GIRL by anyone other than Madonna (the famous pop-singer) would be likely to cause confusion and the Hearing Officer should, therefore, apply the Registrar’s discretion to remove the MATERIAL GIRL registration.

The Hearing Officer noted that the use of the MATERIAL GIRL trade mark after the relevant date was ‘extensive and considerable’, whereas any use of the trade mark by MG Icon was recent and only outside of Australia.  Relying on the E & J Gallo case, the Hearing Officer was satisfied that even if the opponent had not been able to establish use of its MATERIAL GIRL trade mark during the relevant period that it would have been reasonable on the basis of their current use and sales not to remove the trade mark from the Register.

MATERIAL GIRL is to remain registered.

To view the Office decision, click here.